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2d 38
188 U.S.P.Q. 545
Albert L. Jacobs, Jr., New York City, with whom Jacobs & Jacobs, New
York City, P.C., Owen F. Clarke, Jr., Sullivan & Worcester, Boston,
Mass., Albert L. Jacobs, Mark H. Sparrow, and Bruce M. Collins, New
York City, were on brief, for defendants-appellants.
Thomas E. Spath, New York City, with whom N. Dale Sayre, McLean,
Boustead & Sayre, New York City, Robert J. Horn, Jr., and Kenway &
Jenney, Boston, Mass., were on brief, for plaintiff-appellee.
Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit
Judges.
PER CURIAM.
In this appeal, Doyle questions the wisdom of our decision in Sheehan v. Doyle,
513 F.2d 895 (1st Cir. 1975). In that case, Sheehan had sought documentary
discovery from Doyle, and the latter had defended on grounds that Doyle, a
nonresident alien, was beyond the jurisdiction and venue of the district court.
We sustained Doyle, but on the ground that 35 U.S.C. 24 'does not confer
jurisdiction upon the district court, acting on its own, to grant Rule 34
discovery directly, whether against a nonresident alien or a resident citizen.'
513 F.2d at 898. In this, we relied heavily on the en banc decision of the third
circuit in Frilette v. Kimberlin, 508 F.2d 205 (1975). In the present proceeding,
it is Doyle who seeks discovery; and, after being peremptorily turned down by
the district court on the basis of our decision in Sheehan v. Doyle, he brings this
appeal.
2
We regret the uncertainty which a circuit split creates. There are, however,
possible remedies. The Supreme Court may think it desirable to terminate the
divergent interpretations that now exist. Alternatively, other circuits may follow
the third circuit in abandoning the earlier construction. And the Commissioner
of Patents, exercising such powers as he now has, may find that he is able to
contribute to clarification of the situation. Finally, of course, Congress may by
legislative enactment make clear its wishes in this unsettled area.
Affirmed.
From the Patent Office's granting of several continuances to permit courtsponsored discovery, Doyle argues tacit Patent Office approval of these
proceedings. However, until 1975, all circuits considering the issue had ruled
that independent discovery of this nature was in order, and the Patent Office
had every reason to feel that it was obliged to go along willy nilly. Thus we
draw no inferences from any Patent Office continuances
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